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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? To be patentable, a technical invention must:
- be novel;
- involve an inventive step; and
- be industrially applicable.
To be ‘novel’, the solution defined in the patent claim must not have already been made available to the public through writing, lectures or public use or be otherwise known.
An invention will include an inventive step if it is not obvious to a person skilled in the art and it is not general knowledge.
An invention will be capable of industrial application if it is technological in nature and the technical solution can be regularly reproduced.
What are the limits on patentability? The following are excluded from patentability:
- mathematical methods and scientific theories;
- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing games or doing business;
- computer programmes;
- presentations of information.
Surgical or therapeutic treatments or diagnostic methods practised on humans or animals are not regarded as inventions. However, this provision does not preclude the granting of patents for products – including substances and compositions – to be used in any of these methods.
Patents are not granted for plant or animal varieties. However, inventions that involve plants or animals are patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety. Patents are not granted for essentially biological processes for the production of plants or animals. A process for the production of plants or animals is ‘essentially biological’ if it consists entirely of natural phenomena such as crossing or selection. These restrictions do not prejudice the patentability of inventions that involve a microbiological or other technical process or products obtained by means of such a process.
Inventions are patentable even if they involve:
- a product consisting of or containing biological material; or
- a process by means of which biological material is produced, processed or used.
Biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.
The human body at its various stages of formation and development and the simple discovery of one of its elements – including the sequence or partial sequence of a gene – do not constitute patentable inventions. An element isolated from the human body or otherwise produced by means of a technical process – including the sequence or partial sequence of a gene – may constitute a patentable invention, even if the structure of the element is identical to that of a natural element.
To what extent can inventions covering software be patented? Software (ie, a computer program) as such is not patentable.
However, an invention that solves a technical problem in a new and inventive manner and relates to software is patentable as a starting point, even if the problem is solved using a computer program.
To what extent can inventions covering business methods be patented? Business methods as such are not patentable as a starting point. However, new and inventive tools for the implementation of business methods are patentable.
To what extent can inventions relating to stem cells be patented? The various stages of the human body’s formation and development and the simple discovery of one of its elements do not constitute patentable inventions.
However, according to European Court of Justice case law (C-364/13), stem cells resulting from parthenogenesis may be patentable as existing scientific evidence suggests that they cannot develop into human embryos without paternal DNA.
Are there restrictions on any other kinds of invention? Patents are granted for inventions whose commercial exploitation would be contrary to public order or morality. However, the commercial exploitation of an invention may not be considered contrary to public order or morality just because it is prohibited by law or regulation.
In particular, the following inventions are considered unpatentable:
- processes for cloning humans;
- processes for modifying the germline genetic identity of humans;
- industrial or commercial uses of human embryos; and
- processes that modify the genetic identity of animals and are likely to cause suffering without any substantial medical benefit to humans or animals, as well as animals resulting from such processes.
Grace period Does your jurisdiction have a grace period? If so, how does it work? No grace period exists in Finland.
Oppositions What types of patent opposition procedure are available in your jurisdiction? A nine-month opposition period begins when a patent is granted in Finland. During this period, anyone can file an opposition against the patent. Oppositions must be filed with the Finnish Patent and Registration Office and the party filing the opposition must pay a fee.
An opposition can be filed if:
- the patent relates to an invention that is unpatentable (ie, it is not novel or industrially applicable or does not involve an inventive step);
- the invention to which the patent relates has not been described clearly enough for a person skilled in the art to use it;
- the patent includes something that was not included in the original patent application; or
- the scope of patent protection was extended after notice accepting the patent application had been given.
When an opposition has been filed, the patent owner will be notified thereof and will be given an opportunity to submit a statement. If the patent owner does not have a domicile in Finland, it is mandatory to have a representative during the opposition proceedings. In practice, a qualified patent attorney will often be appointed by a party involved in opposition proceedings.
If during opposition proceedings the patent owner seeks to amend the patent in such a manner that there is no obstacle to maintain the patent as amended, the patent office shall maintain the patent in the amended form. The opposition proceedings are based on written documents and – in practice – oral hearings are not arranged.
Apart from oppositions, are there any other ways to challenge a patent outside the courts? No other ways are available.
How can patent office decisions be appealed in your jurisdiction? An appeal must be filed with the Market Court within 60 days of the date on which the patent office’s decision was issued. Appeal proceedings before the Market Court will mostly be based on written documents; oral proceedings are rarely arranged.
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? A patent will usually be issued within three years of the date on which the patent application was filed.
However, it is possible to request the accelerated processing of a patent application from the Finnish Patent and Registration Office, which is free of charge. To be eligible for the fast-track system:
- the invention must relate to bio-economy, circular economy or pure technology solutions;
- the application must have been made via the Patent Prosecution Highway; and
- there must be an important economic reason or other strong argument for fast-tracking the application.
Patent grants cost between €7,000 and €20,000 depending on the applied-for invention’s complexity. In highly complex cases, the cost may exceed €20,000. Further, patentees must pay annuity fees after the third year.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? Besides preliminary injunctions (discussed below in more detail), the only effective way is to file a patent infringement action with the Market Court. Legally, a patent owner could also initiate criminal proceedings in exceptional situations – however, it is normal for corporate entities to proceed by way of civil proceedings.
What scope is there for forum selection? There is no scope for forum selection as the Market Court has had exclusive jurisdiction in patent disputes since late 2013. Previously, the Helsinki District Court had exclusive jurisdiction in patent disputes.
Pre-trial What are the stages in the litigation process leading up to a full trial? The preliminary stage begins when a plaintiff files a summons brief with the court. After the preliminary examination of the summons brief, the court will request a response brief from the defendant. Each party usually files two briefs together. Before the main hearing, at least one preliminary hearing will be held with the judge in charge of the preliminary stage and the parties’ counsels.
The purpose of the preliminary hearing is to clarify the disputed issues, schedule the main hearing and address other practical details. The written evidence filed by the parties and the witnesses that will be heard will also be discussed. The preliminary stage will be officially finalised shortly before the main hearing takes place. After the main hearing, the Market Court will consider the merits of the case and will usually issue its decision within two to three months.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Delays are usually sought via an application to extend the deadline for filing a brief. In addition, the date of the main hearing could provide for delay tactics as it will be agreed on based on the schedules and availability of all parties involved, including judges and witnesses. In such situations, the plaintiff may draw the court’s attention to the defendant’s delay tactics and after hearing such arguments, the court will decide on the hearing dates and other deadlines.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? If the nine-month opposition period has lapsed after the grant of a patent, a validity challenge can be executed only by filing an invalidity action with the Market Court. Such an action is a civil action and the plaintiff will bear the burden of proof and the risk of compensating the patent owner’s legal costs if the challenge is lost.
At trial What level of expertise can a patent owner expect from the courts? The panel of legal judges deciding the matter will – in practice – have no technical background. The judges will be assisted in technical matters by a Market Court engineer and the court may also appoint an external independent expert to assist with relevant technical issues.
Are cases decided by one judge, a panel of judges or a jury? The standard procedure is for patent cases to be handled in the preliminary stage by one judge and in the main hearing stage by a panel of three judges. A Market Court engineer may be appointed by the court to participate in the proceedings by advising the panel of judges on technical issues.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury? Jury trials are not available.
What role can and do expert witnesses play in proceedings? Expert witnesses have an important role in proceedings as, in practice, they are usually appointed by one of the parties. In addition, the expert witness will usually draft a written opinion – which will be filed as evidence before the main hearing – and will often be heard in the main hearing as well. According to new procedural rules, an expert will not technically be heard as a witness, but rather as an expert appointed by a party and accepted by the court to act as a qualified expert in the relevant technological field. The parties may also appoint regular witnesses who have personal experience in the matter (eg, by having personally witnessed a relevant event).
Does your jurisdiction apply a doctrine of equivalents and, if so, how? As a member of the European Patent Convention, Finland applies the doctrine of equivalents. The courts also regularly refer to Article 69 of the European Patent Convention and its Interpretation Protocol. Certain local application principles have also been implemented, which are similar to those of other Nordic countries.
Is it possible to obtain preliminary injunctions? If so, under what circumstances? An injunction can be applied for from the Market Court before or after the actual infringement action is filed. In urgent situations, an injunction can also be applied for and granted ex parte without hearing the defendant. The general pre-conditions for an injunction are:
- the probable right of the patent owner against the defendant;
- the danger of undue detriment caused to the patent owner; and
The plaintiff must establish the alleged likelihood of the patent infringement by providing some evidence on the infringement. For the comparison of interests, the plaintiff must present calculations concerning the damages that would occur if an injunction was not granted.
How are issues around infringement and validity treated in your jurisdiction? Both infringement and validity issues are decided by the Market Court as it has exclusive jurisdiction in patent litigation matters. A mere invalidity defence will not be accepted as a response to an infringement action – instead, a separate invalidity action must be filed. If possible, the Market Court will hear both actions in the same sitting.
Will courts consider decisions in cases involving similar issues from other jurisdictions? While parties have traditionally filed decisions of other jurisdictions as evidence to support their arguments, the courts have not considered such decisions to have considerable influence. However, if the case concerns a European patent that was validated in Finland, European Patent Office decisions concerning the patent would likely be considered carefully. However, the Market Court is not legally bound by European Patent Office decisions in such situations.
Damages and remedies Can the successful party obtain costs from the losing party? Yes – by law, the losing party must bear the reasonable and necessary costs of the winning party. After the main hearing, the parties will be able to comment on the other party’s itemised cost calculations. The court will award legal costs in relation to the decision given on the merits of the case. It is not unusual for the court to rule that only some of the claimed costs be borne by the losing party.
What are the typical remedies granted to a successful plaintiff? Typical remedies include a prohibition on continuing the infringing action and damages.
How are damages awards calculated? Are punitive damages available? Damages include:
- reasonable compensation for the exploitation of the invention; and
- other damages caused to the patent owner.
Reasonable compensation is traditionally calculated as a royalty percentage, while ‘other damages’ mainly include the patent owner’s lost profits. To establish other damages, the plaintiff must present evidence. Reasonable compensation (ie, a royalty) is always available – even if the defendant has not acted negligently. In the case of slight negligence, compensation may be adjusted accordingly. Compensation proceedings for patent infringement will take into account damage that occurred only in the five years before the institution of the proceedings. Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? The court always prohibits the continuation of an infringement if the plaintiff requests it. A permanent injunction will be granted without any pre-conditions if the court holds that the infringement exists.
Timescale and costs How long does it take to obtain a decision at first instance and is it possible to expedite this process? The Market Court will attempt to handle proceedings within 12 to 14 months. Expediting the process is possible to some extent if both parties pursue this.
How much should a litigant plan to pay to take a case through to a first-instance decision? Costs vary extensively depending on such factors as the technological field and the number of experts and witnesses to be heard. Translation issues may increase costs significantly as legal briefs can be filed only in Finnish or Swedish. A rough estimate of the plaintiff’s costs is between €100,000 and €200,000.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? An appeal is possible only if the Supreme Court grants leave to appeal. The Supreme Court’s main function is to handle judicial precedents, which means that the appeal should contain a legal question in need of precedent as a starting point. In practice, the Supreme Court has been extremely reluctant to take patent cases. The processing of an application for a leave to appeal takes on average between four to six months. If leave to appeal is granted, processing of the merits takes on average an additional 16 to 18 months.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? No – as a general rule, the Market Court has exclusive jurisdiction. Arbitration or mediation proceedings may be possible if both parties agree, but – in practice – only court proceedings are used.